The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6586965 for the wordmark “JEIP321” to be used on covers and accessories for cars in class 12 by finding dissimilarity to and unlikelihood of confusion with the “JEEP” mark.[Opposition case no. 2022-900391, decided on September 28, 2023]
Opposed mark
The wordmark “JEIP321” was filed by a Chinese individual for use on steering wheels covers for automobiles, vehicle covers [shaped], upholstery foe vehicles, two-wheeled trolleys, windscreen wipers, anti-dazzle devices for vehicles, ashtrays for automobiles, rearview mirrors, mudguards, cigar lighters for automobiles in class 12 with the JPO on January 25, 2022 (TM App no. 2022-7763).
The JPO admitted registration on July 13, 2022, and published for opposition on July 22, 2022.
Opposition by FCA US LLC
To oppose registration within a statutory period of two months counting from the publication date, FCA US LLC filed an opposition against the opposed mark on September 14, 2022.
FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law because of the remarkable reputation and popularity of the JEEP mark as a source indicator of Chrysler vehicles and a high degree of similarity between the opposed mark “JEIP321” and the opponent’s famous earlier registered mark “JEEP.”
Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an earlier registered mark.
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.
Inter alia, FCA pointed out that the literal element “JEIP” shall be considered as a prominent portion of the opposed mark since numerals lack distinctiveness per se. If so, the opposed mark is confusingly similar to the “JEEP” mark from visual and phonetical points of view.
JPO Decision
The JPO Opposition Board admitted a high degree of reputation and popularity of the “JEEP” mark in connection with four-wheeled automobiles.
In assessing the similarity of the mark, the Board found that a prominent portion of the opposed mark “JEIP” and the “JEEP” mark are less likely to cause confusion from visual, phonetical and conceptual points of view by stating that:
“From appearance, there is a difference in the third letter, “I” and “E” between “JEIP” and “JEEP”. The effect would be anything but negligible on the overall visual impression of both marks, since they are composed of only four characters.
Comparing the sound of “JEIP” with “JEEP”, there is a clear difference at the beginning, “dʒeɪ” and “dʒiː” It shall cause a significant distinction on the overall tone and impression in a short three-sound structure to the extent that relevant consumers would not mishear them when pronounced in unison.
Conceptually, both marks are dissimilar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “JEEP” has a meaning of ‘Jeep brand 4WD vehicles.’”
Even though “JEEP” has become famous in relation to 4WD vehicles, the Board has no reason to believe that relevant consumers would associate the goods in question bearing the opposed mark “JEIP321” with the opponent or any business entity systematically or economically connected with FCA because of a low degree of similarity between the marks.
Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv), and decided to dismiss the entire opposition.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM